Re Opposition by Gulf International Lubricants Ltd to registration of trade mark application 1873395 (1) - GULFPRIDE - in the name of Swire Industry Limited

[2020] ATMO 83

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReOpposition by Gulf International Lubricants Ltd to registration of trade mark application 1873395 (1) – GULFPRIDE – in the name of Swire Industry Limited

Delegate:                 Robert Wilson

Representation:       Opponent: Hazan Hollander

Applicant: Self-represented

Decision:                   2020 ATMO 83

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – Applicant’s Trade Mark deceptively similar to Opponent’s registered trade mark – registration refused

Background

1. This decision concerns an opposition brought by Gulf International Lubricants Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 to registration of the trade mark the subject of the application detailed below. The application is in the name of Swire Industry Limited (‘the Applicant’):

Application Number:	1873395
Filing Date:	14 September 2017
Convention Priority:	7 September 2017 (New Zealand 1075433)
Goods:	Class 1: Chemical products for industrial use, particularly additives for lubricants, greases, industrial oils, motor oils, gear oils, compressor oils and hydraulic oils, all these additives having chemical and physical properties; additives with chemical and physical properties for gasoline particularly for gasoline and diesel oil; additives for liquids for engine radiators; antifreeze solutions for use as additives for liquids for engine radiators and for the water in devices for washing windshields; de-icing compounds; impregnating chemicals for motor car convertible tops; chemical products in the form of aerosols for establishing electrical contact (‘the Applicant’s Goods’)
Trade Mark:	GULFPRIDE	(‘the Applicant’s Trade Mark’)

1. Any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

2. On 1 February 2018, the application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks. The Opponent filed a Notice of Intention to Oppose the registration on 20 February 2018 and a Statement of Grounds and Particulars (‘the SGP’) on 19 March 2018. The SGP nominated grounds of opposition under ss 42(b), 44, 58, 58A, and 60. The Applicant filed a Notice of Intention to Defend on 9 September 2018.

   Evidence

3. The Opponent filed Evidence in Support of its opposition, being:

   ·Declaration made on 15 August 2018 by Richard Hoare, the International General Counsel for the Gulf Oil International Group of companies, with Annexures RH-1 to RH-66. (‘the Hoare declaration’) According to Mr Hoare, the Opponent is a member of the group of companies.

4. The Applicant did not file any evidence.

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party did so.

6. As a delegate of the Registrar of Trade Marks it has fallen to me to decide the matter based on the material discussed above.

   The Opponent

7. According to the Hoare declaration, Gulf Oil International Limited (‘GOI’) is based in the Cayman Islands, was incorporated in 1985 and is a member of the Gulf Oil International Group of companies. GOI wholly owns, among others, the following corporate entities:

   (a)   The Opponent;

   (b)   Gulf Oil Benelux BV (‘GOB’);

   (c)   Gulf Oil Marketing GmbH (‘GOM’);

   (d)   Gulf Oil Middle East Limited.

8. The Hoare declaration further states that the Opponent owns and is responsible for the management of the intellectual property rights of and goodwill in the Gulf Brand (defined below), including the marks of the Gulf Trade Mark Registrations (defined below) in the some 59 countries which include Australia.

   The Gulf Trade Mark Registrations

9. The Opponent is the owner of the following Australian trade mark registrations:

Trade Mark Number	Trade Mark	Specification	Priority Date
156164	GULF	(including) Class 4: Petroleum and its products, namely, fuel oil, gasoline, kerosene, naphtha, lubricating oils, motor oils, lubricating oils for industrial use, technical oils and greases, penetrating lubricating oils, electric motor oil, household lubricants, mineral waxes, lubricating greases and rubber lubricant	23 September 1959
182913	Class 4: Petroleum and its products namely fuel oils, gasoline, kerosene, naphtha, lubricating oils, motor oils, technical and industrial oils and greases, petroleum waxes and lubricating greases	13 September 1963
548537	GULF	(including) Class 37: service stations	7 January 1991
548539	GULF	(including) Class 42: retailing lubricants, oils and greases, roadhouse services	7 January 1991
740014	(including) Class 35: petrol station services Class 39: transportation, storage and distribution of oil petroleum products Class 42: oil exploration	24 July 1997
1252155	GULFSEA	(including) Class 4: lubricants	16 July 2008

1. GOM is the owner of the trade mark registrations detailed below because, according to the Hoare declaration, ‘the Opponent is a company incorporated in Bermuda. Bermuda is not a party to the [Madrid Protocol], and therefore is not entitled to apply for international registration of its trade marks under the Madrid Protocol’.

Trade Mark Number	Trade Mark	Specification	Priority Date
1799918	GULF	(including) Class 35: retail petrol station services Class 37: operating of vehicle services stations	12 September 2016
1799919	Ditto	12 September 2016

1. The Hoare declaration defines the trade marks listed in the previous two paragraphs as ‘the Gulf Trade Mark Registrations’. The same definition is adopted here. In this decision the goods and services for which the Gulf Trade Mark Registrations are registered will be referred to as ‘the Gulf Goods and Services’.

   The Gulf Brand

2. Under the heading The Gulf Brand, the Hoare declaration states:

   The Opponent, GOI and its predecessors have in the period 1901 to date conducted substantial business internationally, including in Australia, using the names GULF, GULF PRIDE and under and by reference to the marks the subject of the Gulf Trade Mark Registrations, in connection with the provision of [the Gulf Goods and Services].

   The Applicant

3. There is nothing before me from which to provide a background of the Applicant.

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 58A, and 60. To successfully oppose the application the Opponent need only establish one of those grounds. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 14 September 2017, being the filing date of the application.

   Discussion

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

   Section 44

5. Relevant provisions of s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i)            a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)           a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (2)…

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

6. In the SGP the Opponent nominated a number of the Gulf Trade Mark Registrations to support the s 44 ground of opposition. One of those was trade mark registration 156164 (detailed above) which is for the plain word GULF (‘the GULF Trade Mark’).

7. To successfully oppose the application pursuant to s 44 the Opponent must establish that the GULF Trade Mark:

   ·     is registered by a person other than the Applicant (‘the first requirement’); and

   ·     has a priority date which is earlier than the priority date of the application (‘the second requirement’);

   ·     is in respect of goods which are similar to the Applicant’s Goods (‘the third requirement’); and

   ·     is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the fourth requirement’).

   The first requirement

8. The GULF Trade Mark is registered by a person other than the Applicant, thus satisfying the first requirement.

   The second requirement

9. The GULF Trade Mark has a priority date which is earlier than the priority date of the application, thus satisfying the second requirement.

   The third requirement

10. The goods for which the GULF Trade Mark is registered are largely identical to the Applicant’s Goods. I note at this point that the search strategy adopted by the examiner during examination of the application did not reveal the GULF Trade Mark. The reason for this being, that the search strategy did not include Class 4. It appears that in 1959, when the GULF Trade Mark was applied for, goods such as lubricants were found in Class 4. When the Applicant applied to register its trade mark such goods were found in Class 1: the relevant part of the examiner’s search strategy included only Class 1 and the related class, Class 31. None of the Gulf Trade Mark Registrations include either of those classes.

    The fourth requirement

    Deceptively Similar?

11. Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

    On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

    Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[3]

    [3] [1963] HCA 66, [13].

12. Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:

    Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

    First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[4]

    Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[5]

    Third, allowance must be made for imperfect recollection.[6]

    Fourth, the effect of the spoken description must be considered.[7]

    Fifth, it is necessary to show a real tangible danger of deception or confusion.[8]

    Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[9] …

    Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[10]

    Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[11]

    Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[12] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[13] [14]

    [4] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

    [5] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Windeyer J).

    [6] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74].

    [7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.

    [8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5.

    [9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

    [10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

    [11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).

    [12] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].

    [13] Ibid [100].

    [14] [2012] FCA 1022, [37]–[46].

13. Even though the Applicant’s Trade Mark is represented in its written form as a single word, it is likely to be interpreted as two words, being GULF and PRIDE. When spoken the trade mark is likely to be pronounced as two words.

14. It was recognised in Starr Partners Pty Ltd v Dev Prem Pty Ltd[15] that ‘one word or feature of a mark can be more striking and memorable than another’. In the absence of submissions from the Applicant which might have proffered an alternative interpretation, it is my view that GULF is the more striking and memorable feature of the Applicant’s Trade Mark. Indeed, GULF is the essential feature of the Applicant’s Trade Mark. When applied to goods such as the Applicant’s Goods, the PRIDE element may well be taken as a type of laudatory term, indicating, perhaps, that the goods are ones of which the manufacturer is particularly proud.

    [15] (2004) 71 IPR 459, [22] (Lindgren, Emmett and Finkelstein JJ).

15. It is possible that GULF PRIDE might be considered to have an overall conceptual meaning along the lines of ‘Pride in a/the gulf’. The Persian Gulf is a significant source of oil and GULF PRIDE might be seen to have some reference to the Persian Gulf and pride thereof. There is nothing before me which suggests that it is the case, however, it would be no surprise if it turned out that the GULF Trade Mark was coined as an allusion to the Persian Gulf. There may be goods and/or services where the ‘Pride in a/the gulf’ conceptual meaning, or similar, is apt; however, in my view, such a concept is far too nebulous when used in connection with goods such as the Applicant’s Goods for this to be taken as a significant interpretation of the Applicant’s Trade Mark.

16. With GULF being the essential feature of the Applicant’s Trade Mark, there is a high likelihood that persons familiar with the GULF Trade Mark will be deceived or confused when faced with the Applicant’s Trade Mark were it to be used in connection with the Applicant’s Goods. The Applicant’s Trade Mark is, therefore, deceptively similar to the GULF Trade Mark. The fourth requirement is thus satisfied, and this ground of opposition is established.

    Decision

17. Section 55 relevantly provides:

    55Decision

    (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

18. I have found the Opponent has established the ground of opposition it raised pursuant to s 44. As the Delegate of the Registrar I accordingly refuse to register the Applicant’s Trade Mark.

    Costs

19. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

    Robert Wilson
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    15 May 2020